Date: 199990429
Docket: T-1362-98
MONTRÉAL, QUEBEC, APRIL 29, 1999
BEFORE: RICHARD MORNEAU, PROTHONOTARY
| In re an objection made by Alcon Pharmaceuticals Ltd. to the application to register the trade mark OPTIBIOL filed by the Institut de Recherche Biologique on October 31, 1991 as No. 692,771 |
Between:
INSTITUT DE RECHERCHE BIOLOGIQUE, S.A.,
Plaintiff,
AND
ALCON PHARMACEUTICALS LTD.,
Defendant.
REASONS FOR ORDER AND ORDER
RICHARD MORNEAU, PROTHONOTARY
[1] This is a motion by the plaintiff pursuant to Rule 312 of the Federal Court Rules (1998) for leave to file two affidavits additional to those already filed by the plaintiff pursuant to Rule 306.
[2] It seems to me that in questions of intellectual property the rules of precedent developed for the provisions now replaced by Rule 312 (namely s. 704(7), and even 704(8), of the Rules of this Court in effect before April 25, 1998) remain fully applicable.
[3] Accordingly, in Prouvost S.A. v. Munsingwear Inc., [1992] 2 F.C. 541 (F.C.A.), Décary J.A. of the Court of Appeal restated at 546 the test to be applied pursuant to s. 704(7), which at the time was subs. 8 of Rule 704:
| A party asking the Court for leave to file a document out of time pursuant to Rule 704(8) must meet the test which Stayer J. defined as follows in Maxim's Ltd. v. Maxim's Bakery Ltd. (1990), 32 C.P.R. (3d) 240 (F.C.T.D.), at page 242: |
| The jurisprudence is clear that in an application for an extension of time under Rule 704(8), the court should take into account both the reasons for the delay and the intrinsic worth of the affidavits (i.e. relevance, admissibility, and potential use to the court). It has been said in some of the cases that both factors must be weighed together: see McDonald's Corp. v. Silcorp Ltd./Silcorp Ltée (1987), 17 C.P.R. (3d) 478, at pp. 479-480, 16 C.I.P.R. 107 (F.C.T.D.); Joseph E. Seagram & Sons v. Canada (Registrar of Trade Marks) (1988), 23 C.P.R. (3d) 283 at p. 284, 13 A.C.W.S. (3d) 36 (F.C.T.D.). Accepting this to be the correct approach for present purposes, I understand it to mean that one must still weigh seriousness of the delay against the potential value of the affidavits and that either may outweigh the other. |
[my emphasis]
| and which McNair J. described as follows in DRG Incorporated v. Datafile Ltd. (1987), 17 C.I.P.R. 126 (FC.T.D.), at page 132: |
| Generally speaking, R. 704 describes a summary procedure for trade mark cases whereby each party is required to file its affidavits at one time and it is only by exception that additional affidavits are permitted out of time and then only if a valid explanation has been given for the delay and it has been demonstrated that the facts contained therein are necessary to enable the Court to properly adjudicate on the issue: see Hiram Walker - Consumers Home Ltd. v. Consumers Distributing Co. (1981), 58 C.P.R. (2d) 40 (Fed. T.D.); Bell & Arkin v. Coronation Knitting Mills Can. Ltd. (1986), 9 C.I.P.R. 81, 10 C.P.R. (3d) 279 (Fed. T.D.). |
[4] It is true that in the case at bar the decision being appealed by the plaintiff contains,
especially as regards the affidavits of Mr. Dionne, outline indications which should have caused the plaintiff to file on time the two affidavits it is now seeking to file. However, I consider that the intrinsic value of each of the said affidavits is such that it outweighs the delay occasioned.
[5] In the case of Mr. Dionne's affidavit, this affidavit seeks to show, in the specific case of a practising pharmacist, that certain products identified by a mark having the prefix "opti" and not owned by the defendant are sold in a pharmacy, in some cases over the counter. This affidavit thus goes to the heart of the case and its existence would certainly assist the Court in its decision on the merits. As to the affidavit of Ms. Lefebvre, the purpose of this is to clarify the interest and the involvement of the plaintiff in the case, in connection with the sale in Canada of products bearing the mark OPTIBIOL. This information could certainly be useful to the judge of the merits.
[6] Accordingly, this motion by the plaintiff is allowed. As of this date the parties must be guided by the order of this Court dated April 15, 1999. Further, there is no basis for ordering, as requested by the defendant, that the plaintiff assume the cost of possible cross-examination of the two deponents. However, it seems to me that the plaintiff must bear the costs of the instant motion.
| Richard Morneau Prothonotary |
Certified true translation
Bernard Olivier, LL. B.
| Federal Court of Canada Trial Division Date: 19990429 Docket: T-1362-98 Between: INSTITUT DE RECHERCHE BIOLOGIQUE, S.A., Plaintiff, AND ALCON PHARMACEUTICALS LTD., Defendant. REASONS FOR ORDER AND ORDER |
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT FILE No: T-1362-98
| STYLE OF CAUSE: INSTITUT DE RECHERCHE BIOLOGIQUE, S.A., |
Plaintiff,
AND
ALCON PHARMACEUTICALS LTD.,
Defendant.
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: April 26, 1999
REASONS FOR ORDER BY: RICHARD MORNEAU, PROTHONOTARY
DATE OF REASONS FOR ORDER: April 29, 1999
APPEARANCES:
Stéphane Poitras for the plaintiff
Paul Paradis
Dan Hitchcock for the defendant
SOLICITORS OF RECORD:
Guy & Gilbert for the plaintiff
Stéphane Poitras
Paul Paradis
Montréal, Quebec
Riches, McKenzie & Herbert for the defendant
Dan Hitchcock
Toronto, Ontario